Ex parte Gatti

Board of Patent Appeals and Interferences

Sep 29, 1998

08027656 (B.P.A.I. Sep. 29, 1998)

Application for patent filed March 8, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN E. GATTI
__________
Appeal No. 95-1515
Application 08/027,6561
__________
ON BRIEF
__________
Before HAIRSTON, FLEMING and CARMICHAEL, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 1 through 9, all of the claims pending in the
application. Appellant's invention relates to creating
Appeal No. 95-1515
Application 08/027,656
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combined photographic or slide transparency copies of two
existing slide transparencies.
Independent claim 1 is reproduced as follows:
1. A photographic apparatus for attachment to a camera
lens for simultaneously creating a single slide
transparency or photograph from a plurality of slide
transparencies having distinct images exposed thereon,
comprising:
an enclosure formed from a plurality of opaque
sides and at least one translucent side, said
enclosure having an aperture therethrough at a
proximal side and having means for connecting
the same to a camera and aligning said aperture
with the camera lens, said enclosure further
having means located therein for holding said
slide transparencies; and
means within said enclosure for directing images
formed from light rays passing through said at
least one translucent side and separately
through each of said plurality of slide
transparencies to and into alignment with said
camera lens.
The references relied on by the Examiner are as
follows:
Ramsdell 2,413,996 Jan. 07, 1947
Papritz 2,736,250 Feb. 28, 1956
Sayanagi 3,674,339 Jul. 04, 1972
Black 3,689,148 Sep. 05, 1972
Murphy 3,815,970 Jun. 11, 1974
Vitou 4,026,651 May 31, 1977
Wyller 4,239,376 Dec. 16, 1980
Mumpower 5,073,789 Dec. 17, 1991
Appeal No. 95-1515
Application 08/027,656
3
Claims 1 through 9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Vitou, Black, Mumpower, Wyller,
Ramsdell, Papritz, Sayanagi and Murphy.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 4, 6 and 7 are
properly rejected under 35 U.S.C. § 103. Thus, we will
sustain the rejection of these claims but we will reverse the
rejection of the remaining claims on appeal for the reasons
set forth infra.
At the outset, we note that Appellant has indicated on
page 3 of the brief the groupings of the claims. In
particular, Appellants state that claims 1 through 4 and 7 are
grouped together. In addition, on page 9 of the brief,
Appellant argues claims 1 through 4 and 7 as one group. 37
CFR § 1.192(c)(5) amended October 22, 1993 states:
For each ground of rejection which
appellant contests and which applies to
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Application 08/027,656
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more than one claim, it will be presumed
that the rejected claims stand or fall
together unless a statement is included
that the rejected claims do not stand or
fall together, and in the appropriate part
or parts of the argument under subparagraph
(c)(6) of this section appellant presents
reasons as to why appellant considers the
rejected claims to be separately
patentable.
As per 37 CFR § 1.192(c)(5), which was controlling at the time
of Appellant's filing the brief, we will, thereby, consider
Appellant’s claims 1 through 4 and 7 to stand or fall
together,
with claim 1 being considered the representative claim. We
will treat claims 5, 6 , 8 and 9 separately.
On pages 4 and 5 of the brief, Appellant argues that
there is no suggestion in the references to combined in the
manner suggested by the Examiner. Appellant argues that a
person skilled in the art who was looking to develop an
attachment that would allow a camera to photograph two
separate and distinct slides and create a single slide with
the two original slides reproduced next to each other would
Appeal No. 95-1515
Application 08/027,656
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hardly be inclined to combine any of the first group of
references (Vitou, Black, Mumpower and Wyller) with the second
group of references (Ramsdell, Papritz, Sayanagi and Murphy).
It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989,
995, 217 USPQ 1, 6 (Fed. Cir. 1983). In addition, the Federal
Circuit states that "[t]he mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). In addition, the Federal Circuit reasons in Para-
Ordnance Mfg. Inc. v. SGS Importers Int’l Inc., 73 F.3d 1085,
1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert.
Appeal No. 95-1515
Application 08/027,656
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denied, 117 S.Ct. 80 (1996), that for the determination of
obviousness, the court must answer whether one of ordinary
skill in the art who sets out to solve the problem and who had
before him in his workshop the prior art, would have been
reasonably expected to use the solution that is claimed by the
Appellant.
The Examiner points to Vitou for a suggestion to combine
the apparatus for making a single photograph from two
photographs as taught in the second group of references
(Ramsdell, Papritz, Sayanagi and Murphy) with camera structure
for making a photograph of a photograph as taught in the
second group of
references (Vitou, Black, Mumpower and Wyller). In
particular,
we note that Vitou teaches in column 1, lines 15-19, that it
is sometimes desirable to reproduce one of more positive
images on the same frame of film.
After a careful review of the references, we find that
from the suggestion found in Vitou, those skilled in the art
would have looked to the teaching of the second group of
references (Ramsdell, Papritz, Sayanagi and Murphy) to modify
Appeal No. 95-1515
Application 08/027,656
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the camera as
taught in the first group of references (Vitou, Black,
Mumpower and Wyller) to obtain a photographic apparatus for
attachment to a camera lens for simultaneously creating a
single slide transparency or photograph from a plurality of
slide transparen-cies having distinct images exposed thereon
as recited in Appellant's claim 1.
Appellant further points out on pages 4 and 5 of the
brief that the second group of references (Vitou, Black,
Mumpower and Wyller) makes a single photograph from two
photographs where the two photographs are of an image
simultaneously photographed from two angles. Appellant
argues that since the two photographs are of the same image
viewed from two different angles that the two
photograph are not two different slide transparencies.
We disagree. Vitou, Black, Mumpower and Wyller teach
that the photographs are not the same image but the same
subject viewed from two different angles. Furthermore, we
note that Appellant's claim 1 language only requires that the
slide transparencies have distinct images exposed thereon.
The claim language does not preclude images of the same
Appeal No. 95-1515
Application 08/027,656
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subject at different angles. An image of a subject at one
angle is a distinct image from another image of the subject at
another angle. Therefore, we will sustain the Examiner’s
rejection of claims 1 through 4 and 7.
On page 5 of the brief, Appellant argues that first
surface mirrors recited in claim 6 are utilized to guarantee
the reflection of only one image. However, we note that claim
6 only recites that the "mirror means comprises first surface
mirrors" and does not require the limitation as argued by
Appellant. We find that the Examiner's finding that Murphy,
Papritz and Sayanagi teach first surface mirrors as recited in
Appellant's claim 6 is reasonable. Therefore, we will sustain
the Examiner's rejection of claim 6.
On pages 5 and 6 of the brief, Appellant argues the
limitations recited in claims 5, 8 and 9. The Examiner has
not
shown how the references read on these limitations. We are
not inclined to dispense with proof by evidence when the
proposition at issue is not supported by a teaching in a prior
art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
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Application 08/027,656
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this evidence in order to establish a prima facie case. In re
Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72
(CCPA 1966).
In view of the foregoing, the decision of the Examiner
rejecting claims 1 through 4, 6 and 7 under 35 U.S.C. § 103 is
affirmed; however, the decision of the Examiner rejecting
claims 5, 8 and 9 under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMES T. CARMICHAEL )
Appeal No. 95-1515
Application 08/027,656
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Administrative Patent Judge )
VSH
Appeal No. 95-1515
Application 08/027,656
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Norman E. Lehrer
1205 North Kings Highway
Cherry Hill, NJ 08034